DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting.
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action.
Claims 1, 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 17/940,470 in view of Hosseini (US 20180203261) and Azuma (US 5912064).
Regarding claims 1 and 3, claim 3 of ‘470 recites the limitations of claims 1 and 3, except for the substrate forming a substrate layer of reflective material, which ‘470 recites is transparent; the external part component being a dial; and the spacing layer being in direct contact with the substrate layer.
Azuma teaches (Figs. 3, 5) an external part component (61) forming a substrate layer made of reflective material (col. 1:52-53) and the external part component being a dial (6 in Fig. 3).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted ‘470’s substrate layer with Azuma’s external part component formed as a substrate layer. One of ordinary skill in the art would have been motivated to make substitution to create a watch dial with a decorative, colorful appearance.
Hosseini teaches (Fig. 4) a spacing layer (14) in direct contact with a substrate layer (12).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arranged ‘470’s substrate layer and stack of thin layers so that the spacing layer is in direct contact with the substrate layer. One of ordinary skill in the art would have been motivated to make this arrangement to create a watch dial with a colorful, aesthetic appearance.
Claims 2 and 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 5-6, and 8, respectively, of copending Application No. 17/940,470 in view of Hosseini and Azuma.
Regarding claims 2 and 5-7, claims 2, 5-6, and 8 of ‘470 recites the limitations of claims 2 and 5-7, respectively, except for the stack of thin layers comprising an encapsulation layer made of transparent material, the solid-state phase switching layer being between the encapsulation layer and the spacing layer, the substrate forming a substrate layer of reflective material, which ‘470 recites is transparent or translucent; the external part component being a dial; and the spacing layer being in contact with the substrate layer.
Hosseini teaches (Fig. 4) an encapsulation layer (16) made of transparent material ([0029]), a spacing layer (14), a solid-state phase switching layer (10) inserted between said encapsulation layer (16) and the spacing layer (14), a substrate forming a substrate layer (12) that is partially reflective (abstract) and in contact with the spacing layer (14). One of ordinary skill in the art would have been motivated to (A) combine Hosseini’s encapsulation layer with ‘470’s stack of thin layers such that the solid-state phase switching layer is between the encapsulation layer and the spacing layer and (B) substitute the substrate layer in co-pending claim 3 with the substrate layer of Hosseini such that the substrate layer is in contact with the substrate layer and part of the substrate. One of ordinary skill in the art would have been motivated to make these modifications to create a color filter that imbues the structure the transmitted light shines on with a colored, aesthetic appearance ([0020] of Hosseini).
Azuma teaches (Figs. 3, 5) an external part component (61) forming a substrate layer made of reflective material (col. 1:52-53) and the external part component being a dial (6 in Fig. 3).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted ‘470’s substrate layer with Azuma’s external part component formed as a substrate layer. One of ordinary skill in the art would have been motivated to make substitution to create a watch dial with a decorative, colorful appearance.
These are provisional nonstatutory double patenting rejections.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Azuma (US 5912064) in view of Hosseini (US 2018/0203261).
Regarding claims 1 and 7, Azuma discloses (Figs. 3, 5) a watch case comprising a middle (1) to which a crystal (8) and a back (10) are fastened so as to form an internal volume, said watch case including, in said internal volume, an external part component (61) whereon a stack of thin layers (62-64) is deposited, wherein the external part component (61) forms a substrate layer (61), the external part component being a dial (6 in Fig. 3), and the external part component (61) formed as the substrate layer (61) being made of a reflective material (col. 1:52-53), wherein the stack of thin layers is deposited in an outer surface of the external part component formed as the substrate layer (Fig. 5).
Azuma does not show the stack of thin layers comprising an encapsulation layer made of transparent material, a spacing layer, and a solid-state phase switching layer inserted between said encapsulation layer and the spacing layer, the phase switching layer being configured so as to have a refractive index capable of varying under exposure from light rays so as to impart to the stack of thin layers at least two interferential colors, wherein the spacing layer separates the phase switching layer from an external part component formed as a substrate layer, and the spacing layer is in direct contact with an external part component formed as the substrate layer.
Hosseini discloses (Fig. 4) an external part component (12) forming a substrate layer (12), whereon a stack of thin layers is deposited, the stack of thin layers comprising an encapsulation layer (16) made of transparent material ([0029]), a spacing layer (14), and a solid-state phase switching layer (10) inserted between said encapsulation layer (16) and the spacing layer (14), the phase switching layer (10) being configured so as to have a refractive index capable of varying under exposure from light rays ([0025]) so as to impart to the stack of thin layers (Fig. 4) at least two interferential colors (Fig. 3 shows the multiple colors reflected), wherein the spacing layer (14) separates the phase switching layer (10) from the external part component formed as the substrate layer (12) and wherein the stack of thin layers (Fig. 4) is deposited on an outer surface (top of 12) of the external part component (12) with the spacing layer (14) in direct contact with the substrate layer (12).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Hosseini’s stack of thin layers for Azuma’s stack of thin layers. One of ordinary skill in the art would have been motivated to make this substitution to achieve the predictable result of imbuing a watch dial with a colorful, decorative, aesthetic appearance.
Regarding claim 2, Azuma in view of Hosseini discloses the watch case according to claim 1, wherein the phase switching layer (Hosseini, Fig. 4, 10) is configured to have two reversibly switchable phase states, said phase states being a crystalline phase and an amorphous phase (Hosseini, [0025]).
Regarding claim 3, Azuma in view of Hosseini discloses the watch case according to claim 1, wherein the encapsulation layer (16 in Fig. 4 of Hosseini) is “as transparent as possible” ([0019] of Hosseini).
Hosseini does not show the encapsulation layer being specifically transparent at the wavelength of the light rays under the exposure whereof the refractive index of the phase switching layer is capable of varying.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have made Hosseini’s encapsulation layer transparent at the wavelength of light rays under the exposure whereof the refractive index of the phase switching layer is capable of varying. One of ordinary skill in the art would have been motivated to make this specification so that the phase switching layer receives as much light as possible to expedite phase switches and color changes and reduce exposure time.
Regarding claim 5, Azuma in view of Hosseini discloses a method for decorating the external part component of a watch case according to claim 1, comprising exposing the stack of thin layers to light rays ([0025] of Hosseini), on a predefined exposure zone ([0033] and [0052] of Hosseini), so as to locally change the phase of the phase switching layer ([0025] of Hosseini) and to generate a pattern ([0052] of Hosseini) on said external part component.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Azuma in view of Hosseini as applied to claim 5 above, and further in view of Yoshinaga (US 20220212287).
Regarding claim 6, Azuma in view of Hosseini discloses the decoration method according to claim 5, wherein the light rays are generated by a laser beam ([0025] in view of Hosseini), so as to control the localized temperature rise of the phase switching layer ([0025] of Hosseini) and the shape of the predefined exposure zone ([0033] and [0052] of Hosseini).
Azuma in view of Hosseini does not explicitly show the laser beam being controlled by a control unit so as to also control the exposure time of the predefined exposure zone.
Yoshinaga teaches a laser beam being controlled by a control unit ([0030] and Fig. 4) so as to control an exposure time of a predefined exposure zone. Because the control unit’s control of the laser is preprogrammed ([0039]), the exposure time and exposure zone are therefore controlled.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Azuma by using a control unit to control the laser, as suggested by Yoshinaga. One of ordinary skill in the art would have been motivated to make this modification to create a precise and accurate laser irradiation.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Azuma in view of Hosseini as applied to claim 7, and further in view of Mcfarland (US 1821561).
Regarding claim 8, Azuma in view of Hosseini discloses the watch case according to claim 7, but does not show the external part component formed as the substrate layer being made of Pt, Rh, Ag, or Al.
Mcfarland teaches an external part component made of silver (pg. 1, line 13).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Azuma’s external part component material for Mcfarland’s silver. One of ordinary skill in the art would have been motivated to make this substitution to create a shiny, visually pleasing watch dial.
Regarding claim 9, Azuma discloses the watch case according to claim 8, wherein the external part component is formed on the horological movement. In Fig. 3 of Azuma, the dial 6 is above the movement 3, so the external part component is on the movement.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot. In particular, regarding Applicant’s argument that a substitution of Hosseini’s external part component for Azuma’s external part component would not yield a spacing layer in direct contact with the external part component formed as a substrate layer, the new ground of rejection cites Azuma as the primary reference disclosing an external part component formed as a substrate layer with a stack of thin layers disposed on top, and Hosseini as a secondary reference such that it would have been obvious to substitute Hosseini’s stack of thin layers (14, 10, 16) for Azuma’s thin layers. Thus, Hosseini’s spacing layer (14) would be in direct contact with Azuma’s substrate layer (61).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/MATTHEW DANIEL HWANG/Examiner, Art Unit 2833
/EDWIN A. LEON/Primary Examiner, Art Unit 2831
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